EXHIBIT 4.2
================================================================================
TENARIS PREMIUM CONNECTIONS TECHNOLOGY
LICENSE AGREEMENT
BY AND BETWEEN
TENARIS CONNECTIONS BV.
AND
TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
DATED JULY 10, 2002
================================================================================
TABLE OF CONTENTS
Page
----
ARTICLE 1. DEFINITIONS......................................................................................... 1
ARTICLE 2. LICENSE............................................................................................. 1
Section 2.1 Granting of Licenses..................................................................... 1
Subsection 2.1.1 Threading and Reconstruction of Full Length Products............... 1
Subsection 2.1.2 Threading and Reconstruction of Accessory Equipment................ 2
Subsection 2.1.3 Sale of threaded Products and Accessory Equipment.................. 2
Subsection 2.1.4 Use of Trademarks.................................................. 2
Subsection 2.1.5 Threading and Sale of Tenaris Premium Connections on
full length tubulars not manufactured by Tenaris................... 2
Section 2.2 Infringements............................................................................ 2
Section 2.3 Use of Products by End Users............................................................. 3
ARTICLE 3. PAYMENTS............................................................................................ 3
Section 3.1 Royalties................................................................................ 3
Section 3.2 Payment of Royalties..................................................................... 3
Section 3.3 Taxes.................................................................................... 3
Section 3.4 Records.................................................................................. 4
Section 3.5 Reports.................................................................................. 4
Section 3.6 Right to Audit........................................................................... 4
ARTICLE 4. CONFIDENTIAL INFORMATION............................................................................ 4
Section 4.1 Delivery of Proprietary Documentation.................................................... 4
Section 4.2 Exchange of Confidential Information..................................................... 5
ARTICLE 5. MARKING PRODUCTS.................................................................................... 5
Section 5.1 Obligation to ▇▇▇▇....................................................................... 5
Section 5.2 Use of Trademarks........................................................................ 6
ARTICLE 6. BUSINESS AND TECHNOLOGY INFORMATION; TOOLING AND GAUGES; TRAINING OF PERSONNEL; IMPROVEMENTS........ 6
Section 6.1 Obligation to Provide Business and Technical Information................................. 6
Section 6.2 Tooling and Gauges....................................................................... 6
Section 6.3 Right to Inspect Gauges.................................................................. 7
Section 6.4 Maintenance of Gauges; Liability for damages............................................. 7
Section 6.5 Training of Personnel.................................................................... 7
Section 6.6 Availability of Specialists.............................................................. 7
Section 6.7 Field Service............................................................................ 8
Section 6.8 Customer Qualification Tests............................................................. 8
i
TABLE OF CONTENTS
(continued)
Page
----
Section 6.9 Maintenance of Information, Gauges and Tooling........................................... 8
Section 6.10 Breach of Maintenance and Non Disclosure Obligation...................................... 8
Section 6.11 Sales Literature......................................................................... 8
Section 6.12 Licensee Improvements.................................................................... 9
ARTICLE 7. PRODUCT QUALITY AND PERFORMANCE..................................................................... 9
Section 7.1 Compliance Obligations................................................................... 9
Section 7.2 Certification to Thread.................................................................. 9
Section 7.3 Licensee Evaluation Questionnaire........................................................ 10
Section 7.4 Obligation to Provide Access to Licensee's facilities.................................... 10
Section 7.5 Quality Problems......................................................................... 10
ARTICLE 8. WARRANTY............................................................................................ 10
Section 8.1 Warranty................................................................................. 10
Section 8.2 Exclusion of Tooling..................................................................... 10
Section 8.3 Warranty to Customers.................................................................... 11
ARTICLE 9. INDEMNITY........................................................................................... 11
ARTICLE 10. EXCLUSION OF CONSEQUENTIAL AND OTHER INDIRECT DAMAGES.............................................. 12
ARTICLE 11. TERM AND TERMINATION............................................................................... 12
Section 11.1 Duration................................................................................. 12
Section 11.2 Early Termination by Tenaris............................................................. 12
Section 11.3 Completion of Pending Works by Licensee.................................................. 12
Section 11.4 Insolvency............................................................................... 12
Section 11.5 Termination for Default.................................................................. 13
Section 11.6 Effect of Termination.................................................................... 13
ARTICLE 12. NOTICES............................................................................................ 13
ARTICLE 13. APPROVALS.......................................................................................... 14
Section 13.1 Registration of the Agreement............................................................ 14
Section 13.2 Cooperation to Obtain Approvals and Licenses............................................. 14
ARTICLE 14. FORCE MAJEURE...................................................................................... 14
ARTICLE 15. GOVERNING LAW; DISPUTE RESOLUTION.................................................................. 15
Section 15.1 Governing Law............................................................................ 15
Section 15.2 Dispute Resolution....................................................................... 15
ii
TABLE OF CONTENTS
(continued)
Page
----
ARTICLE 16. ASSIGNMENT, SUBLICENSING AND SUB CONTRACTING....................................................... 16
Section 16.1 Assignment............................................................................... 16
Section 16.2 No Sub-Licensing or sub-contracting by Licensee.......................................... 16
ARTICLE 17. MISCELLANEOUS...................................................................................... 16
Section 17.1 Severability............................................................................. 16
Section 17.2 Non Waiver............................................................................... 16
Section 17.3 Entire Agreement......................................................................... 17
Section 17.4 Headings................................................................................. 17
Section 17.5 Choice of Language....................................................................... 17
iii
TENARIS PREMIUM CONNECTIONS TECHNOLOGY
LICENSE AGREEMENT
This Tenaris Premium Connections Technology License Agreement (this "Agreement")
is entered into as of July 10, 2002, by and between Tenaris Connections BV, a
corporation organized and existing under the laws of The Netherlands, having its
offices at ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇ ▇▇, ▇▇▇▇▇▇▇▇▇▇ Shiphol, Amsterdam
(hereinafter referred to as "Tenaris") and Tubos ▇▇ ▇▇▇▇▇ de Mexico S.A., a
corporation organized and existing under the laws of Mexico, having its
principal place of business at ▇▇ ▇▇▇,▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇-▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇ (hereinafter "Licensee").
WHEREAS, Tenaris owns certain technical information and know-how, relating to
the Threading and Reconstruction of Tenaris Premium Connections, and certain
trademarks, commercial names and other designations used in connection with the
manufacture and sale of Tenaris Premium Connections;
WHEREAS, Licensee is in the business of providing products and services to the
oil and gas drilling industry;
WHEREAS, Tenaris is willing to grant technology, and trademark licenses and to
provide technical assistance to Licensee under certain conditions;
NOW THEREFORE, in consideration of the premises and of the covenants and
undertakings of the Parties herein below, the sufficiency of which is hereby
acknowledged, Tenaris and Licensee agree as follows:
ARTICLE 1. DEFINITIONS
Unless otherwise defined or the context otherwise requires, capitalized terms
shall have the meanings assigned to them in Schedule "A".
ARTICLE 2. LICENSE
SECTION 2.1 GRANTING OF LICENSES.
Subject to the terms and conditions of this Agreement Tenaris hereby grants
Licensee the following licenses:
Subsection 2.1.1 Threading and Reconstruction of Full Length Products
A non-exclusive license (without right to sub-license) to Thread and
Reconstruct Tenaris Premium Connections on full length Products of all
grades in the Territory.
1
Subsection 2.1.2 Threading and Reconstruction of Accessory Equipment
A non-exclusive license (without right to sub-license) to Thread and
Reconstruct Accessory Equipment with Tenaris Premium Connections of all
grades in the Territory..
Subsection 2.1.3 Sale of threaded Products and Accessory Equipment
A non-exclusive license (without right to sub-license) to sell
Worldwide Products and Accessory Equipment Threaded with Tenaris
Premium Connections in accordance with this Agreement.
Subsection 2.1.4 Use of Trademarks
A non-exclusive license to use Trademarks for the sale and marketing of
Tenaris Premium Connections on Products and Accessory Equipment that
have been Threaded or Reconstructed with Tenaris Premium Connections.
Subsection 2.1.5 Threading and Sale of Tenaris Premium Connections on
full length tubulars not manufactured by Tenaris
Licensee shall not Thread, Reconstruct or sell Tenaris Premium
Connections on full length tubulars not manufactured by either Siderca
S.A.I.C., Tubos ▇▇ ▇▇▇▇▇ de Mexico S.A., Dalmine S.p.A., NKKTubes,
Tubos ▇▇ ▇▇▇▇▇ de Venezuela S.A. or Algoma Seamless Tubulars or their
respective affiliates, unless expressly authorized by Tenaris in
writing.
SECTION 2.2 INFRINGEMENTS
(a) Tenaris covenants not to bring suit against Licensee for infringement
of any Patent arising from Licensee's performance in strict accord with
this Agreement.
(b) Tenaris shall be primarily responsible for the defense of any
infringement claims made against Licensee relating to the use of the
Technology, Patents or Trademarks. Licensee shall promptly give notice
to Tenaris if Licensee becomes aware of any possible infringement of
the Technology, Patents or Trademarks in the Territory. Licensee shall
have no right to bring any action asserting any infringement of the
Technology, Patents or Trademarks without the prior consent of Tenaris.
Tenaris shall be entitled to participate and control such actions.
Licensee shall not be entitled to take any action that would adversely
affect the right or validity of any Patent, Technology or Trademarks
without the prior consent of Tenaris, which may be withheld in its sole
and absolute discretion.
2
SECTION 2.3 USE OF PRODUCTS BY END USERS
Use of Products and Accessory Equipment by end users (drilling contractors, oil
companies and other similar users) is not restricted by this Agreement and such
end users may use and transfer such Products and Accessory Equipment freely
throughout the world without restriction hereunder.
ARTICLE 3. PAYMENTS
SECTION 3.1 ROYALTIES
In consideration of the licenses granted herein, Licensee agrees to pay Tenaris
royalty amounts set forth in Schedule "B".
SECTION 3.2 PAYMENT OF ROYALTIES
Royalty payments shall accrue with respect of any Tenaris Premium Connection
Threaded or Reconstructed pursuant to this Agreement at the moment of its
Threading Royalties shall be paid in U.S. Dollars by deposit in the bank account
previously designated by Tenaris in writing. Royalties shall be paid within 60
(sixty) calendar days of the end of each calendar quarter in which Tenaris
Premium Connections have been Threaded. If Licensee fails to make payment within
such period of time (or fails to report the number of Tenaris Premium
Connections Threaded during a calendar quarter), interest on the unpaid amount
shall be due in addition to the principal at the three-month London Interbank
Offered Rate for U.S. dollars in effect at the time, plus 5 (five) percentage
points, until payment is made in full. If the delay in the payment of Royalties
extends for more than 90 days, Tenaris shall be entitled to terminate this
Agreement in accordance with Section 11.5.
SECTION 3.3 TAXES
All payments by Licensee to Tenaris shall be free of all taxes (including VAT)
which shall be borne by the Licensee. In the event that any withholding or
deduction from any payment to be made by Licensee is required in respect of any
taxes, then Licensee will:
(a) pay to the relevant authority the full amount required to be so
withheld or deducted;
(b) promptly forward to Tenaris an official receipt or other documentation
satisfactory to Tenaris evidencing such payment to such authority; and
(c) pay to Tenaris such additional amount or amounts as is or are necessary
to ensure that the net amount actually received by Tenaris will equal
to the full amount Tenaris would have received had no such withholding
or deduction been required.
3
SECTION 3.4 RECORDS
Licensee shall keep accounting documents and records reflecting on all of the
Threading, Reconstruction and sales of Products and Accessory Equipment Threaded
with Tenaris Premium Connections. Such documents and records shall include all
information necessary to calculate the amounts owed hereunder. The records shall
be kept at Licensee's facilities for Tenaris' auditor review for a period of 4
(four) years following the Threading or Reconstruction of the licensed Tenaris
Premium Connections.
SECTION 3.5 REPORTS
Licensee shall promptly send Tenaris within 30 (thirty) calendar days of the end
of each calendar quarter, a statement in the format set forth in Schedule "C" of
the number of Tenaris Premium Connections Threaded hereunder in such quarter and
indicating at least the sizes, types, invoices numbers, pricing of Products,
customer name and delivery places for such Tenaris Premium Connections and
calculation of royalties due.
SECTION 3.6 RIGHT TO AUDIT
Tenaris shall be entitled to audit Licensee's accounting records and
documentation related to this Agreement at least twice annually (including, but
not limited to, individual books and those documents mentioned under Section 3.4
above).
Tenaris agrees not to divulge to third parties any information gained on
occasion of such audits.
The cost of the audits shall be borne by Tenaris. However, if such audit should
bring to light any discrepancies between the accounting records or other
documentation and the real quantities of Tenaris Premium Connections Threaded or
Reconstructed and/or sold, or any other negligence in record keeping, Licensee
shall, without prejudice to any other rights or remedies of Tenaris hereunder or
under applicable law (including the termination of this Agreement), pay or
reimburse Tenaris, for the cost of the audit.
ARTICLE 4. CONFIDENTIAL INFORMATION
SECTION 4.1 DELIVERY OF PROPRIETARY DOCUMENTATION
Tenaris will, during the term of this Agreement, provide Licensee with access to
Proprietary Documentation relating to Tenaris Premium Connections. Licensee
agrees to refrain from: copying or abridging such Proprietary Documentation;
providing such Proprietary Documentation or copies thereof to any third party;
or using such Proprietary Documentation for any purpose other than performance
under this Agreement. Licensee agrees to promptly return all Proprietary
Documentation, including all copies and abridgments thereof, to Tenaris upon
termination of this Agreement.
4
SECTION 4.2 EXCHANGE OF CONFIDENTIAL INFORMATION
During the term of this Agreement, each party to this Agreement may or will
receive, directly or indirectly from the other party, information which the
other party considers confidential ("Confidential Information"). Confidential
Information may be received in tangible form, or may be received visually or
orally. The receiving party agrees to hold in strict confidence, and not to
disclose to third parties, or use for any purpose other than performance under
this Agreement any Confidential Information which the receiving party receives
from the disclosing party either tangible or intangible. Further, the receiving
party agrees to refrain from disclosing the disclosing party's Confidential
Information to any Person or party, except employees of the receiving party who
have a need to know the Confidential Information in order for the receiving
party to perform and receive its full benefit under this Agreement and who have
agreed in writing to maintain the confidentiality of Confidential Information.
The receiving party agree to promptly return all documentation and other
tangible things embodying the disclosing party's Confidential Information which
are in the possession of or under the control of the receiving party, upon
termination of this Agreement for any reason.
The above obligations of confidentiality and non-use of Confidential Information
apply both during the term of this Agreement and thereafter. However, these
obligations of confidentiality and non-use shall not apply to any information
which:
(a) was known to the receiving party, as shown by suitable evidence, at the
time the information was received from the disclosing party and who is
not subject to an obligation of confidentiality to the disclosing
party; or
(b) is available, or becomes available to the public through no fault of
the receiving party, its Affiliates, or agents; or
(c) is disclosed to the receiving party by a third party who is not subject
to an obligation of confidentiality to the disclosing party; or
(d) is required by a final, unappealable order of any court or government
agency having competent jurisdiction over the information; or
(e) is independently developed by any of the parties without reference to
Confidential Information.
ARTICLE 5. MARKING PRODUCTS.
SECTION 5.1 OBLIGATION TO ▇▇▇▇
Licensee shall ▇▇▇▇ each Product or item of Accessory Equipment on which Tenaris
Premium Connection is Threaded or Reconstructed with marks showing:
5
(a) the Tenaris Premium Connections was Threaded or Reconstructed by
Licensee under license from Tenaris;
(b) the appropriate logos and Trademark(s) for the Tenaris Premium
Connection; and
(c) the appropriate patent number or reference to patent numbers.
SECTION 5.2 USE OF TRADEMARKS
Licensee shall use Trademarks only in conjunction with Tenaris Premium
Connections Threaded or Reconstructed by Licensee at its facilities in the
Territory pursuant to this Agreement and in literature and advertising as
approved in advance by Tenaris. All goodwill relating to the Trademarks shall
belong exclusively to Tenaris and in the event of a termination of this
Agreement and Licensee's rights with respect to the Trademarks, no payment shall
be due or payable to Licensee. Licensee has no license, either by grant or
inference, to use Trademarks, except as specifically allowed under this
Agreement. Use by Licensee of Trademarks shall inure solely to the benefit of
Tenaris. Licensee agrees to refrain from using or seeking registration of any
trademark or trade name the same or confusingly similar to Trademarks, both
during the term of this Agreement and thereafter.
ARTICLE 6. BUSINESS AND TECHNOLOGY INFORMATION; TOOLING
AND GAUGES; TRAINING OF PERSONNEL; IMPROVEMENTS
SECTION 6.1 OBLIGATION TO PROVIDE BUSINESS AND TECHNICAL INFORMATION
Tenaris shall make available to Licensee promptly following the execution of
this Agreement business and technical information which, in Tenaris' opinion is
reasonably required to Thread or Reconstruct Tenaris Premium Connections on
Products and Accessory Equipment as contemplated under this Agreement. Technical
information shall include, as required, drawings, inspection manuals, gauging
manuals, standards and specifications of quality and performance of Tenaris
Premium Connections on Products and Accessory Equipment and manufacturing
processes and procedures. Technical information shall be in the English
language. Tenaris shall make available to Licensee all changes or supplements to
the Technology that are incorporated.
SECTION 6.2 TOOLING AND GAUGES
Licensee agrees to purchase or rent solely from Tenaris, a Tenaris Affiliate or
a reputable manufacturer approved by Tenaris, the Tooling and Gauges required
for Threading and/or Reconstruction of Tenaris Premium Connections on Products
and Accessory Equipment by Licensee pursuant to the licenses granted hereunder.
Gauge rental shall be made in the terms and conditions set forth in Schedule "D"
herein. Licensee shall follow the procedural rules and policies issued by
Tenaris from time to
6
time relating to the calibration, verification, service or verification of
Gauges against master Gauges held by Tenaris.
SECTION 6.3 RIGHT TO INSPECT GAUGES
Tenaris is entitled, but not obligated, to periodically inspect all Gauges used
by Licensee in connection with the Threading and Reconstruction of Tenaris
Premium Connections, upon giving one (1) day prior written notice to Licensee.
Tenaris will provide Licensee with procedures to determine from inspection of
such Gauges when re-calibration is necessary. Licensee will be responsible for
calibration of the Gauges. Licensee shall bear all costs incurred for the
shipping of Gauges from and to the calibration site, including customs fees,
duties, taxes and deposit expenses.
SECTION 6.4 MAINTENANCE OF GAUGES; LIABILITY FOR DAMAGES.
Licensee shall return to Tenaris the leased Gauges in their entirety and
functionality, and in the event of damages (beyond normal wear and tear),
Licensee shall be responsible for repairing or replacing such Gauges.
SECTION 6.5 TRAINING OF PERSONNEL
Licensee may, from time to time, at its own expense send a reasonable number of
employees to the manufacturing facility of any Affiliate of Tenaris for a
reasonable period of time, for the purpose of receiving technical assistance and
studying methods employed by Tenaris in the Threading and Reconstruction of
Tenaris Premium Connections on Products and Accessory Equipment. The time,
schedule and number of employees will be mutually agreed between Licensee and
Tenaris. Licensee shall indemnify and hold Tenaris harmless from any claim,
award, or damage arising from injury, sickness or death of such employees,
including the injury, sickness or death resulting from the sole or contributory
negligence of Tenaris, its employees, officers or agents. Licensee shall pay all
salaries or wages, and all expenses of Licensee's representatives sent to
Tenaris' facilities and shall pay Tenaris a fee per person for each day of
training, subject to an annual increase (effective for training provided from
January 1, 2003) equal to the annual change in the United States Producers Price
Index occurred during the preceding year.
SECTION 6.6 AVAILABILITY OF SPECIALISTS
At the request of Licensee, Tenaris shall provide technical specialists to
consult with Licensee concerning Threading and Reconstruction of Tenaris Premium
Connections on Products and Accessory Equipment, and assist Licensee with any
problems that may arise in relation thereto. Should Licensee require the
services of technical specialists at any place other than the manufacturing
facility of any Affiliate of Tenaris, Licensee will be required to pay to
Tenaris the amount of all reasonable travel and living expenses for the
technical specialist provided at Tenaris' then current daily rate, (present
daily rate is US$ 500 and shall be increased by no more than 5% in any one
year), for each day a
7
technical specialist is away from his home office. Provision of technical
specialists shall depend upon availability. Should Licensee's requirements cause
Tenaris to hire technical specialists that are not part of Tenaris' personnel,
the full cost of such technical specialists shall be borne by Licensee.
SECTION 6.7 FIELD SERVICE
Unless otherwise agreed upon by the Parties, Tenaris shall not provide any
technical assistance for field service for Products or Accessory Equipment
Threaded or Reconstructed by Licensee under this Agreement.
SECTION 6.8 CUSTOMER QUALIFICATION TESTS
Tenaris shall conduct customer qualification tests requested by Licensee subject
to Licensee bearing the costs incurred in such qualification.
SECTION 6.9 MAINTENANCE OF INFORMATION, GAUGES AND TOOLING
Licensee shall be responsible for the maintenance of all Proprietary
Documentation, Confidential Information and Tooling provided to it. This
includes proper storage, inventory, and protection as deemed necessary and as
directed by Tenaris. Further, Licensee agrees to follow all procedures
established by Tenaris. concerning the maintenance and inventory of manuals,
drawings, other Proprietary Documentation, and Gauges. Repair or replacement of
damaged or lost manuals, drawings, and Gauges will be charged to Licensee,
normal wear and tear excepted.
SECTION 6.10 BREACH OF MAINTENANCE AND NON DISCLOSURE OBLIGATION
In the event that if any Proprietary Documentation, Confidential Information,
Technology or Gauges, in whole or in part, or any reproduction of same, is found
outside the receiving party's possession without prior written consent of the
disclosing party in a manner that would reasonably lead one to believe that the
receiving party has materially breached its obligations hereunder, then the
disclosing party has, in addition to its other legal remedies, the right to
terminate this Agreement in accordance with Section 11.5, without any right to a
cure period. Each of the Parties shall also be entitled to seek injunctive
relief for a breach of this Section 6.10 without the necessity of proving
irreparable harm and without posting bond.
SECTION 6.11 SALES LITERATURE
Licensee shall obtain Tenaris' written approval on all sales literature for
Tenaris Premium Connections before such literature is distributed.
8
SECTION 6.12 LICENSEE IMPROVEMENTS
Should Licensee develop any modifications or improvements in the design or
manufacture of Tenaris Premium Connections using Patents or Technology, Licensee
shall communicate such modifications or improvements to Tenaris and hereby
grants a royalty-free non-exclusive license to Tenaris to make, use, sub-license
and sell Tenaris Premium Connections on Products and Accessory Equipment
incorporating such technology under terms and conditions similar to those
provided in this Agreement, and only for as long as Licensee is allowed to use
the Patents and Technology, except in the case of termination of this Agreement
under Section 11.5, in which case such license would have the same duration as
that of the patents, if any, disclosed under that license or would be in force
for so long as the know-how disclosed under that license remained confidential
and secret.
ARTICLE 7. PRODUCT QUALITY AND PERFORMANCE
SECTION 7.1 COMPLIANCE OBLIGATIONS
Licensee understands that the safety of Tenaris Premium Connections and
protection of Trademarks are primary reasons for maintaining the quality and
performance of the licensed Tenaris Premium Connections. In this regard Licensee
shall at all times provide trained personnel and operate its facilities in the
manner necessary to Thread or Reconstruct Tenaris Premium Connections in
accordance with Technology and Patents and in strict conformance to the
specifications and standards of quality directed by Tenaris from time to time.
Licensee shall comply with all manufacturing procedures, finishing and gauging
practices set forth in the Technology and Patents. Any changes in manufacturing
procedures, such as threading, finishing and gauging shall be made only with
Tenaris' prior written consent. In the event any Tenaris Premium Connections
that are Threaded or Reconstructed by Licensee fail to comply with the above
mentioned standards and specifications of quality, Licensee shall refrain from
marking any non-complying connections with any Trademark. To assure compliance
with this provision, Tenaris shall make available to Licensee on an ongoing
basis its current specifications and standards for finishing.
SECTION 7.2 CERTIFICATION TO THREAD.
As a condition precedent to the validity of the licenses granted herein,
Licensee shall obtain a certification by Tenaris of its ability to thread
Tenaris Premium Connections in accordance with Technology. In order to obtain
such certification Licensee shall provide Tenaris with samples of Tenaris
Premium Connections machined and/or processed in the facility which meet
Tenaris' standards and specifications of quality and performance. Final
certification, following the sample review, shall be within the sole discretion
of Tenaris. Thereafter, Tenaris may require at any time the performance of tests
at any time. Failure to meet Tenaris' standards at any time may result,
notwithstanding any other remedy available, in termination under Section 11.5
9
SECTION 7.3 LICENSEE EVALUATION QUESTIONNAIRE.
Licensee shall be required to complete and respond evaluation questionnaires in
order to allow Tenaris to review technical and quality performance by Licensee.
Tenaris shall be entitled to make site evaluations on licensee's facilities to.
review such technical and quality performance. Tenaris shall be entitled to
terminate this Agreement if Licensee does not meet Tenaris' standards of
technical or quality performance,
SECTION 7.4 OBLIGATION TO PROVIDE ACCESS TO LICENSEE'S FACILITIES.
Licensee shall provide free access to its facilities to Tenaris officials
assigned to perform inspections under Sections 6.3. and Section 7.3.
SECTION 7.5 QUALITY PROBLEMS
Tenaris shall cooperate to resolve problems Licensee may have in complying with
Tenaris Premium Connection standards and specifications of quality. In the event
Tenaris Premium Connections that are Threaded or Reconstructed by Licensee fail
to comply with the Tenaris Premium Connections standards and specifications of
quality, then Licensee shall refrain from marketing or selling such
non-conforming Tenaris Premium Connections until such time as the problems
causing such non conformance are solved. In the event that Licensee fails to
resolve such problems within a reasonable time after discovery of the defect, or
after the time it should have discovered the defect, Tenaris may terminate this
Agreement by means of a written notice to Licensee.
ARTICLE 8. WARRANTY
SECTION 8.1 WARRANTY
Tenaris warrants that the Technology supplied to Licensee pursuant to this
Agreement shall, if properly applied under circumstances equivalent at Tenaris's
manufacturing operations, permit Licensee to Thread Tenaris Premium Connections
of the same kind and nature Threaded by Tenaris's Affiliates, provided, however,
that no representations or warranty is made or given as to the suitability of
the Technology if used in any manner different than that conducted by Tenaris.
Except as expressly provided herein, the Technology, Patents and Trademarks to
be licensed under this Agreement are being licensed without presentation or
warranty of any kind or nature, including title, design, performance, fitness
for a particular purposes, absence of defects, latent or otherwise,
non-infringement of patents or intellectual property or merchantability. It
being understood that the licenses granted hereunder are being provided strictly
on an "as is" "where is" basis.
SECTION 8.2 EXCLUSION OF TOOLING
Tooling, including thread form inserts, groove tools, Teflon seal rings, and
thread protectors supplied by Tenaris for each Tenaris Premium Connection may
not be
10
manufactured by Tenaris. Accordingly, Licensee agrees that Tenaris shall not be
warrantor with respect to any threadform inserts, groove tools, Teflon seal
rings, thread protectors or other tooling which licensee may purchase directly
(subject to Section 6.2) from any vendor. Licensee shall be responsible for the
inspection of such Tooling from any vendors.
SECTION 8.3 WARRANTY TO CUSTOMERS
Whenever market practice may allow it, Licensee shall use reasonable efforts to
limit its warranty to customers for all Tenaris Premium Connections on Products
and Accessory Equipment Threaded or Reconstructed by the terms stated in
Schedule "E".
ARTICLE 9. INDEMNITY
(a) Licensee and Tenaris, shall indemnify and hold harmless the respective
other party, its directors, officers and employees from any loss,
damage or destruction of the property and equipment of the other, its
directors, officers, employees and invitees (whether owned by such one
party or by a third party); and from all liability and expenses
(including attorney's fees), arising from all claims, demands and
causes of action for the injury or death of any director, officer,
employee or invitee of such one party; arising from an incident or
performance under this Agreement without regard to the cause or causes
thereof or the negligence or fault (active or passive) of any party or
parties or whether based upon any theory of strict liability. In the
event this indemnity is limited by any law, then the indemnity herein
shall apply to the maximum extent allowed in the jurisdiction where the
loss, damage, destruction, injury or death occurs.
(b) Licensee hereby agrees to indemnify, defend and hold Tenaris and
Tenaris' Affiliates and their respective officers, directors,
employees, agent, stockholders and controlling persons and their
respective successors and assigns harmless from and against in respect
of any and all liabilities, losses, damages, demands, assessments,
claims, costs and expenses (including interest, awards, judgments,
penalties, settlements, fines, diminution in value, cost and expenses
incurred in connection with investigating and defending any claims or
causes of action (including, without limitation, attorneys' fees and
expenses, and all fees and expenses of consultants and other
professionals) actually suffered, incurred or realized by such party
arising out of or resulting from or relating to the use of the
Technology, Patents or Trademarks by Licensee, the Threading, the
Reconstruction, sale or use of any Tenaris Premium Connections on
Products by Licensee or for any breach of any covenant or agreement by
Licensee hereunder except:
(i) for the portion of any claim, demand, cause of action, loss or
cost directly attributable to the willful misconduct of
Tenaris; and
(ii) for the conditions of mutual indemnity of ARTICLE 9(a) above.
11
ARTICLE 10. EXCLUSION OF CONSEQUENTIAL AND OTHER INDIRECT
DAMAGES.
Neither Party shall be liable to the other for any special, consequential,
incidental, exemplary or punitive damages arising from or incidental to
performance under this Agreement, including without limitation, loss of profits,
revenue or business.
ARTICLE 11. TERM AND TERMINATION
SECTION 11.1 DURATION
This Agreement shall become effective and the rights herein granted shall
commence retroactively as of May 1st 2002, and shall continue in effect for one
year therefrom, and will be automatically renewed every one (1) year thereafter
unless Tenaris otherwise notifies Licensee with sixty (60) days prior written
notice, or unless otherwise terminated in accordance with the terms of this
ARTICLE 11.
SECTION 11.2 EARLY TERMINATION BY TENARIS
Tenaris will be entitled to unilaterally terminate this Agreement at any time by
giving Licensee sixty (60) days advanced written notice of its intention to
terminate this Agreement. In such case, Section 11.3 shall apply and Tenaris
shall not be required to pay any compensation to Licensee as a result of any
losses suffered by Licensee due to such unilateral termination by Tenaris.
SECTION 11.3 COMPLETION OF PENDING WORKS BY LICENSEE
Whenever notice of termination is given, during the remaining life of this
Agreement, Licensee shall be entitled to complete the work as scheduled with
their customers on any orders requiring Products or Accessory Equipment placed
prior to the termination notice, irrespective of the agreed time for
performance. Notwithstanding the foregoing, nothing in this Agreement shall be
construed to provide for a license or other rights to use or employ Technology
and the term of any license granted hereunder with respect to any patent in any
jurisdiction shall not extend beyond the expiration date of such patent in such
jurisdiction.
SECTION 11.4 INSOLVENCY
In the event Licensee, its successors or assigns shall become bankrupt or
insolvent, or enter into a composition with creditors, or if a receiver shall be
appointed, or if any petition or application for reorganization be filed by or
against it, then this Agreement may be terminated by Tenaris. However, Licensee
shall not be thereby discharged from any liability to Tenaris for any amounts
due at the time of termination or from antecedent liability and the licenses to
Tenaris shall continue in effect without impairment.
12
SECTION 11.5 TERMINATION FOR DEFAULT
If either Party shall fail to observe or perform any of its material promises,
agreements, or undertakings under this Agreement, and fails to remedy any such
breach within thirty (30) days of notice to do so from the other party, then the
aggrieved party may, upon expiration of the thirty (30) days notice period, give
written notice of termination of this Agreement either forthwith or at a future
date designated by the aggrieved party. The Parties agree that, without
prejudice to any indemnification rights they may be entitled to, the party in
breach of its obligations shall be subject to an injunction of the appropriate
court against any further such violations without the requirement to prove an
inadequate remedy at law or obligation to post bond or similar security.
SECTION 11.6 EFFECT OF TERMINATION
Termination shall cause the end of the Parties' rights and obligations under the
Agreement in relation to the license, with the exception of
(a) the obligations for which compliance is pending at
the time of the termination;
(b) the obligations of confidentiality and non-use of
Confidential Information,
(c) obligations of warranty and indemnity under this
Agreement.
(d) the agreement of the Parties regarding Notices,
Governing Law, Resolution of Disputes and
miscellaneous.
In addition the Parties shall promptly return to Tenaris all Gauges, Tooling,
Proprietary Documentation, Technology and Confidential Information, including
all copies thereof which are in the possession or under control of Licensee.
ARTICLE 12. NOTICES
All notices, consents, waivers, and other communications under this Agreement
must be in writing and will be deemed to have been duly given when (a) delivered
by hand (with written confirmation of receipt), (b) sent by telecopier (with
written confirmation of receipt), provided that a copy is mailed by certified
mail, return receipt requested, (c) sent by electronic mail or (d) when received
by the addressee, if sent by a recognized overnight delivery service (receipt
requested), in each case to the appropriate addresses and telecopier numbers set
forth below (or to such other addresses and telecopier numbers as a party may
designate by notice to the other party):
13
TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO TENARIS CONNECTIONS B.V.
S.A.
Edificio Parque Reforma ▇▇ ▇▇▇▇▇▇ 250
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ 400-17 Piso (2804) Campana
Col. Chapultepec ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇, D.F., Mexico
Argentina
Attention: ▇▇▇▇▇ ▇▇▇▇ Attention: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
Facsimile No. ▇▇-▇▇▇▇-▇▇▇▇▇▇ Facsimile No.: ▇▇-▇▇▇▇-▇▇▇▇▇▇
Telephone No.: ▇▇-▇▇▇▇-▇▇▇▇▇▇ Telephone No.: ▇▇-▇▇▇▇-▇▇▇▇▇▇
e-mail: ▇▇▇@▇▇▇▇▇.▇▇▇.▇▇ e-mail: ▇▇▇@▇▇▇▇▇▇▇.▇▇▇
ARTICLE 13. APPROVALS
SECTION 13.1 REGISTRATION OF THE AGREEMENT
Promptly upon execution and delivery of this Agreement, Licensee shall register,
if required, this Agreement in the appropriate departments, agencies and/or
offices of government within the Territory, and shall obtain all necessary
approvals as may be required by law in the Territory.
SECTION 13.2 COOPERATION TO OBTAIN APPROVALS AND LICENSES
Tenaris and Licensee shall cooperate in obtaining any approvals or licenses
which may be required in connection with the implementation of any portion of
this Agreement
ARTICLE 14. FORCE MAJEURE
If the performance of this Agreement or of any obligation under this Agreement,
except payment of moneys due and maintaining information and documents in
confidence, is prevented, restricted or interfered with by acts of government,
war, rebellion, riot, labor unrest, unavailability of materials, acts of God, or
any other force, act or condition beyond the reasonable control of the parties
("Force Majeure"), the party affected by Force Majeure shall be excused from
such performance to the extent of such prevention, restriction or interference,
provided that the party so affected promptly notifies the other party of the
Force Majeure condition, uses its best efforts to avoid or remove the Force
Majeure condition, and continues performance under this Agreement with utmost
dispatch when such Force Majeure condition is removed. In the event a Force
Majeure condition results in suspension of performance under this Agreement for
a continuous
14
period of 90 days or more, the party not affected by the Force Majeure condition
may terminate this Agreement by giving the affected party written notice of
termination.
ARTICLE 15. GOVERNING LAW; DISPUTE RESOLUTION
SECTION 15.1 GOVERNING LAW
This Agreement shall be deemed made pursuant to, and shall be governed by the
laws of Italy, except the conflict of laws provisions thereof.
SECTION 15.2 DISPUTE RESOLUTION
If, during the term of this Agreement or after its termination, disputes,
controversies, claims or differences arising out or relating to this Agreement
(including any questions as to the existence, validity, termination, discharge,
breach or enforceability of this Agreement and of this arbitration clause),
arise between Tenaris and Licensee, the Parties shall take every reasonable
effort to negotiate an amicable settlement. In the event the Parties are unable
to reach a settlement within thirty (30) days after notice by any of the Parties
is given to the other party acknowledging the existence of a dispute to be
solved in accordance with the provisions of this Section 15.2, then either party
may request arbitration pursuant to the then current rules of the International
Chamber of Commerce domiciled in Paris for arbitration in accordance with the
rules of such organization. Each Party shall appoint one arbitrator of its
choice, and the two appointed arbitrators shall appoint a third arbitrator. A
decision agreed to by at least two of the arbitrators shall be the decision of
the arbitration proceeding. In the event either party fails to appoint an
arbitrator or in the event no agreement is reached between the two arbitrators
as to the appointment of the third arbitrator in accordance with the foregoing
provisions, such arbitrator or arbitrators shall be appointed, upon application
of the interested party, by the Court of Arbitration of the International
Chamber of Commerce. Unless the Parties agree otherwise, the site of the
arbitration shall be Bergamo, Italy. Arbitration proceedings shall be conducted
in the English language. Any decision or award of the arbitrators shall be based
solely on the provisions of this Agreement, provided, however, that to the
extent that the subject matter for the decision or award is not provided for in
such provisions, the decision or award shall be based upon the controlling law
of this Agreement, excluding the conflicts of laws provisions thereof. The
arbitrators shall not be requested nor shall they have the power to render any
decision or award except in accordance with the preceding sentence. The award
rendered in any arbitration commenced hereunder shall be final and conclusive
and judgment thereon may be entered in any court having jurisdiction for its
enforcement. Neither party shall appeal to any court from the decision of the
arbitration panel. In addition, except for injunctive relief in aid of
arbitration, neither party shall have any right to commence or maintain any suit
or legal proceeding concerning a dispute hereunder until the dispute has been
determined in accordance with the arbitration procedure provided for herein and
then only for enforcement of the award rendered in such arbitration. Pending
settlement of any dispute, the parties shall abide by their obligations under
this Agreement without prejudice to a final adjustment in
15
accordance with an award rendered in an arbitration settling such dispute. A
party may be entitled to receive injunctive relief from a court of competent
jurisdiction in aid of arbitration.
ARTICLE 16. ASSIGNMENT, SUBLICENSING AND SUB-
CONTRACTING
SECTION 16.1 ASSIGNMENT
The licenses granted in this Agreement are personal to the Licensee and the
Licensee shell not assign the same or grant any sub-license thereunder without
the prior written consent of Tenaris. Tenaris shall be entitled to assign this
Agreement to an Affiliate at any time during the life of the Agreement.
SECTION 16.2 NO SUB-LICENSING OR SUB-CONTRACTING BY LICENSEE
Licensee may not grant any sublicenses in connection with the licenses herein
granted to Licensee nor subcontract any of the works that licensee is entitled
to perform under the licenses.
ARTICLE 17. MISCELLANEOUS
SECTION 17.1 SEVERABILITY
The Parties expressly agree that it is not the intention of either party to
violate any public policy, statute or common law rule; and if any provision(s)
of this Agreement shall be held to be invalid, illegal or unenforceable, in
whole or in part, in any jurisdiction within which the Agreement is to be
performed, or if any appropriate government agency or authority shall require
the Parties to delete any provision of this Agreement, such invalidity,
illegality, enforceability or deletion shall not impair or affect the remaining
provisions of this Agreement, so long as the material purposes of this Agreement
can be determined and effectuated. The Parties shall endeavor in good faith
negotiations to replace the invalid, illegal, unenforceable or deleted
provisions by valid provisions, the effect of which comes as close as legally
possible to the intention of the parties upon entering into this Agreement,
provided, however that any of the Parties shall be entitled to terminate the
Agreement should any provision of the Agreement is held to be invalid, illegal
or unenforceable in whole or in part.
SECTION 17.2 NON WAIVER
The failure of one party hereto to enforce at any time any of the provisions of
this Agreement, or exercise any rights or any elections herein provided, shall
in no way be considered to be a waiver of such provisions, rights or elections
or in any way to affect the validity of this Agreement. The exercise by such
party of any rights or any elections under the terms of this Agreement shall not
preclude or prejudice such party from exercising the same or any other rights or
elections it may have under this Agreement
16
SECTION 17.3 ENTIRE AGREEMENT
This Agreement contains the entire Agreement between the parties applying to the
matters herein contained and has been entered into relying only upon the
provisions contained herein and not upon any other representation by either of
the Parties. This Agreement supersedes all representations, agreement,
statements and understandings whether written or oral, relating to such matters
made prior to execution of this Agreement. This Agreement can only be amended by
an agreement in writing executed by the Parties hereto. This Agreement may not
be modified, supplemented, explained or waived except as agreed to in a writing
executed by both parties.
SECTION 17.4 HEADINGS
The headings used in this Agreement are inserted for convenience and
identification only, and are not intended to describe, interpret, define, or
limit the scope, extent or intention of this Agreement or any provision hereof.
SECTION 17.5 CHOICE OF LANGUAGE
This Agreement has been prepared in English and, notwithstanding any translation
of this Agreement into any other language, the English version of this Agreement
shall control in all respects.
IN WITNESS WHEREOF, each party has caused this Agreement in multiple original to
be subscribed by duly authorized representative on the Effective Date.
TENARIS CONNECTIONS B.V. TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
By: /s/ ▇▇▇▇▇▇ ▇▇▇ By: /s/ ▇▇▇▇▇ ▇▇▇▇ /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
------------------- --------------------------------------
Name: HBM Europe B.V. Name: ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
Title: Managing Director Title:
17
LIST OF SCHEDULES
SCHEDULE -DEFINITIONS
SCHEDULE -ROYALTIES
SCHEDULE -FORM OF STATEMENT OF SECTION 3.5
SCHEDULE -GAUGE RENTAL FEES
SCHEDULE -WARRANTY TO CUSTOMERS
SCHEDULE -LIST OF LICENSED CONNECTIONS
SCHEDULE -PATENTS
SCHEDULE -TRADEMARKS
18
TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY
LICENSE AGREEMENT
SCHEDULE "A"
DEFINITIONS
1. "ACCESSORY EQUIPMENT" shall mean the threaded items necessary to
complete a well to produce oil and gas, such as crossovers, connectors,
pup joints, liner hangers, landing nipples, packers, packer stringers,
end line pressure control equipment, safety valves, gas lift valve
mandrels, lift plugs, lift caps, hydrostatic test plugs, hydrostatic
test caps, handling plugs, handling caps, discharge head hangers, float
shoes, float guides, float collars, flow couplings, collars, blast
joints, tubing anchors, side pocket mandrels, couplings and similar
equipment as defined in API Standards series 5, latest edition, but
excluding the items, Threaded Couplings, casing, and tubing.
2. "AFFILIATE" of any specified Person means any other Person directly or
indirectly controlling or controlled by or under direct or indirect
common control with such specified Person. For the purposes of this
definition, "control" when used with respect to any specified Person
means the power to direct the management and policies of such Person
directly or indirectly, whether through the ownership of voting
securities, by contract or otherwise; and the terms "controlling" and
"controlled" have meanings correlative to the foregoing.
3. "TENARIS PREMIUM CONNECTIONS " means the current line of Tenaris
Premium Connections described in Schedule "F" and any improvements made
in the future.
4. "GAUGES", means such Tenaris' proprietary gauges and gauge tools
necessary for Licensee to Thread or Reconstruct Tenaris Premium
Connections on Products and Accessory Equipment pursuant to the
licenses granted hereunder to it.
5. "PATENTS" means all patents and patent applications relating to the
Threading or Reconstruction of Tenaris Premium Connections on Products
and Accessory Equipment described in Schedule "G" and future patents
and patent applications to the extent added as provided in this
Agreement.
6. "PERSON" means any individual, corporation, partnership, joint venture,
association, joint-stock company, trust, unincorporated organization or
government or any agency or political subdivision thereof.
7. "PRODUCTS" means tubular products excluding drill pipe, manufactured
under API 5CT specifications by either Siderca S.A.I.C., Tubos ▇▇ ▇▇▇▇▇
de Mexico S.A.,
1
Dalmine S.p.A., NKKTubes, Tubos ▇▇ ▇▇▇▇▇ de Venezuela S.A. or Algoma
Seamless Tubulars or their respective affiliates.
8. "PROPRIETARY DOCUMENTATION" means any drawing or document, in either
man-readable or machine-readable form, or any tangible thing which is
the property of the Parties, including without limitation all price
lists, discount sheets, customer lists, supplier lists, quotations,
analytical data, market data, engineering data, drawings, computer
software, manuals, specifications, standards, designs, methods,
procedures, techniques, formulations, instruments, and other business
and technical information in tangible form which are the property of
either of the Parties.
9. "RECONSTRUCT" means re-cutting a worn or damaged thread for Tenaris
Premium Connections on Products and Accessory Equipment.
10. "TECHNOLOGY" means all current (and future to the extent provided in
this Agreement) technical information owned which Tenaris has the right
to license in the Territory and which is reasonably necessary for
Licensee to Thread or Reconstruct Tenaris Premium Connections on
Products and Accessory Equipment, including Tenaris data, methods,
procedures, specifications, standards, drawings, know-how, manuals,
Proprietary Documentation and Confidential Information.
11. "TENARIS" means Tenaris-Connections BV.
12. "TERRITORY" means Mexico and its offshore waters.
13. "THREAD" and "THREADING" means the processes of cutting threads
embodying the Technology and Patents licensed hereunder.
14. "TOOLING" means tooling and accessories made to a party's specification
(either by a party hereto or any other Person) for use in Threading or
Reconstruction of Tenaris Premium Connections on Products or Accessory
Equipment in accordance with a party's Technology or Patents, including
without limitation thread form inserts, groove tools, Teflon seal
rings, thread protectors.
15. "TRADEMARKS" means those current trademarks and trade names listed in
Schedule "H" and any future trademarks and trade names that may
identify Tenaris Premium Connections which are or may be the subject of
a license under this Agreement, both registered and unregistered.
2
TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "B"
ROYALTIES
TENARIS PREMIUM CONNECTIONS
In consideration of the sublicenses granted herein by TENARIS to Licensee,
Licensee shall pay TENARIS royalties, as follows:
a) for Threading:
(1) for full length Products of 9% or less Cr threaded with Tenaris Premium
Connections, the royalty shall be six per cent (6%) of the Net Selling
Price of the tubular product;
(2) for full length Products of more than 9% Cr threaded with Tenaris
Premium Connections, the royalty shall be three per cent (3%) of the
Net Selling Price of the tubular product;
Net Selling Price: means the gross amounts actually invoiced by Licensee for
said product, including packaging, marking, documentation and any other charges
but not including (a) excise taxes on sales of consumption; (b) any charges
incurred for transportation of the product; (c) insurance; (d) custom fees,
consular fees, tally and dispatch costs; (e) any discounts or rebates normally
licensed to the buyer of such product and (f) any amounts reimbursed by Licenses
to its customers.
b) for Reconstruction of Products and Threading and Reconstraction of
Accessory Equipment
SIZES (INCHES) USD/END
2 3/8" through 3 1/2" 10
4" through 5 1/2" 15
6 5/8" through 7 5/8" 20
8" through 9 5/8" 25
10 3/4" through 14" 34
Longer than 14" 45
1
NOTE: If accessory or joint of pipe (pin or box) is machined on both ends, the
royalty will be twice the amount shown above.
2
TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "C"
FORM OF STATEMENT OF SECTION 3.5.
1
------------------------------------------------------------------------------------------------------------------------------------
ROYALTY AND GAUGES RENT REPORT REGARDING CUT OF TENARIS CONNECTIONS
------------------------------------------------------------------------------------------------------------------------------------
LICENCEE FIRM LOCATION LICENCE AGREEM. NO
------------------------------------------------------------------------------------------------------------------------------------
YEAR QUARTERS - FROM MONTH: TO MONTH: DOC. PAGE: OF: DOC. ISSUE DATE:
------------------------------------------------------------------------------------------------------------------------------------
LICENCEE'S CONTACT NAME FAX NO PHONE NO E MAIL:
------------------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
THD. QUANTITY ROYALTY AMOUNT
PURCHASE INVOICE INVOICE CONNECTION STEEL THREAD ----------------------------------------
ORDER NUMBER CUSTOMER NUMBER DATE THREADED O.D. W.T. GRADE TYPE PIN BOX EACH ONE TOTAL
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
---------------------------------------------------------------------------------------------------------------------------
GRAND TOTAL GR. TOTAL
---------------------------------------------------------------------------------------------------------------------------
--------------------------------------------
GAUGE RENT AMOUNT
PURCHASE -----------------------------
ORDER NUMBER PER DAY NO. OF DAY TOTAL
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
--------------------------------------------
GRAND TOTAL
--------------------------------------------
NOTES
------------------------------------------------------------------------------------------------------------
CONTACT NAME - ▇▇▇▇▇▇ ▇▇▇▇▇▇ FAX # ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
ADDRESS: ▇▇ ▇▇▇▇▇▇ ▇▇▇ - ▇▇▇▇▇▇▇ (▇▇▇▇) ▇▇▇▇▇▇ ▇▇▇▇▇ - ▇▇▇▇▇▇▇▇▇ PHONE # ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
E MAIL ▇▇▇▇▇▇▇@▇▇▇▇▇▇▇.▇▇▇
- ROYALTY AND GAUGE RENT REPORT, MUST BE SENT TO TENARIS WITHIN 30 DAYS
AFTER END OF EACH QUARTER OF CALENDAR YEAR.
- ALSO IN CASE THAT NO ONE CONNECTION HAS BEEN CUT DURING A QUARTER OF
CALENDAR YEAR, FILL IN TOP PART OF REPORT, WRITE ON NOTE SPACE "NO
ACTIVITY DURING ABOVE MENTIONED QUARTER OF CALENDAR YEAR," AND SEND IT
TO THE CONTACT ADDRESS.
TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "D"
GAUGE RENTAL FEES
LICENSEE shall pay Tenaris the following daily lease rates for any set of gauges
(pin or box), for any single threaded end and size (in US$/day):.
Sizes USD/Day
---------------------------------------------------------------
2 3/8" through 3 1/2" 31
---------------------------------------------------------------
4" through 5 1/2" 33
---------------------------------------------------------------
6 5/8" through 7 5/8" 35
---------------------------------------------------------------
8" through 9 5/8" 42
---------------------------------------------------------------
Longer than 10 3/4" 47
---------------------------------------------------------------
DAYS are defined as days from date of departure to date of arrival to Gauges
Hub. For overseas delivery, transit time up to a maximum of eight (8) days will
not be charged.
LICENSEE shall arrange at its expense the shipments to and from Tenaris's Plants
or Tenaris's designated depot.
LICENSEE shall be liable only for the Gauges shipped from LICENSEE's plant to
and from Tenaris's Plants or Tenaris's designated depot.
LICENSEE will pay within 30 (thirty) calendar days from receipt of invoice.
QUARTERLY LEASE
LICENSEE may lease Gauges, at its own discretion, for a period of 3 (three)
monthsIn this case, the Quarterly lease, will be invoiced to LICENSEE at the
beginning of each quarter period and it will be paid within 30 (thirty) calendar
days from invoice receipt. Amounts are the following (in US$):
Sizes USD/Quarter
---------------------------------------------------------------
2 3/8" through 3 1/2" 1.395
---------------------------------------------------------------
4" through 5 1/2" 1.485
---------------------------------------------------------------
6 5/8" through 7 5/8" 1.575
---------------------------------------------------------------
8" through 9 5/8" 1.890
---------------------------------------------------------------
Longer than 10 3/4" 2.115
---------------------------------------------------------------
Note: the Tenaris technical drawings shall indicate every combination diameter,
wall thickness, connection.
1
TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "E"
WARRENTY TO CUSTOMERS
Licensee warrants that all Materials delivered under this Order shall conform to
the specifications and descriptions listed on the face side hereof or if none
are listed, then to Licensee standard specifications for such Materials. The
foregoing warranty shall continue in effect until such Materials are accepted or
the time period to inspect the same expires, whichever shall first occur, except
for the warranty just given. Licensee HEREBY DISCLAIMS ALL OTHER WARRANTIES OF
EVERY KIND AND CHARACTER WHETHER EXPRESS OR IMPLIED, INCLUDING THOSE RELATING TO
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR INTENDED USE. Any misuse
of Materials or the improper application or alteration thereof after delivery by
Licensee shall be at the Buyer's risk and expense. Provided, however, in the
event the Buyer timely rejects any Materials which fail to conform to the
specifications and descriptions of this Order, then Licensee shall have the
option either to replace such Materials at its sole cost and expense or to give
the Buyer credit as to the price therefore. Unless specifically stated in this
Order to the contrary, Licensee shall not be liable for any transportation,
installation, fabrication, inspection, testing or other expenses incurred by the
Buyer or its customers as a result of any breach of warranty herein. In
addition, any claim made by the Buyer against Licensee shall in no event exceed
the invoice price for the specific Materials in question, nor Licensee be liable
for any consequential or incidental damages which may be suffered or incurred on
account of any nonconforming Materials shipped to the Buyer or its customer, it
being agreed that in all cases. Licensee shall have the opportunity to remedy
and correct any breach of warranty in the manner provided above and that the
existence of any nonconforming shipment shall not constitute a default unless
the same reoccurs in more than one instance, and provided Licensee fails to give
adequate written assurances to the Buyer after a demand is made therefore.
1
TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "F"
LIST OF LICENSED CONNECTIONS
NK 3SB
NEW NK 3SB
NK 3SB-ST
NK 3SB-SL
NK HW
NK HWSL
NK EL
1
TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "G"
PATENTS
Tenaris Patents under which Licensee is licensed by Tenaris for Threading and
Reconstruction, use or sale of Products and Accessory Equipment pursuant to this
Agreement:
1
TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICOS S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "H"
TRADEMARKS
Trademarks under which Licensee is licensed by TENARIS for Threading,
Reconstruction, use or sale of Products and Accessory Equipment pursuant to this
Agreement:
Tenaris
NK 3SB
NEW NK 3SB
NK 3SB-ST
NK-3SB-SL
NK HW
NK HWSL
NK EL
1
ADDENDUM TO TENARIS PREMIUM CONNECTIONS TECHNOLOGY
LICENSE AGREEMENT
This Addendum (the "Addendum") is entered into by and between Tenaris
Connections BV, a corporation organised and existing under the laws of The
Netherlands, having its offices at ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇ ▇▇, ▇▇▇▇▇▇▇▇▇▇
Schiphol, Amsterdam (hereinafter referred to as "Tenaris") and Tubos de Acerro
de Mexico S.A., a corporation incorporated under the laws of Mexico, having its
offices at ▇▇ ▇▇▇.▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇-▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇ (hereinafter
referred to as "Licensee", and collectively, the "Parties").
RECITALS
A. On July 10th 2002, Tenaris and Licensee executed a Tenaris Premium
Connections Technology License Agreement for the use of technology and know-how,
by means of which Tenaris granted to Licensee a non-exclusive license to use,
cut, manufacture and sell Tenaris Premium Connections (the "Agreement").
Capitalised terms used herein without definition shall have the meanings
assigned to them in the Agreement; and
B. The Parties wish to amend certain schedules to the Agreement to
incorporate certain newly developed connections of Tenaris to the scope of the
licenses granted under the Agreement;
C. All information to be delivered by Tenaris in connection with such new
connections include information, know-how and technology developed by Tenaris
and its affiliates, including but not limited to the technology of the
TenarisBlue connection, that is being patented by Tenaris and its affiliates and
still secret; and
D. Licensee understands that the Technology and all the information and
documentation related to it is an industrial secret, technology with a
corresponding patent application and proprietary information of Tenaris and its
Affiliates, and agrees to retain in confidence such information and
documentation and treat it in accordance with the provisions of the Agreement.
Now, therefore, both Parties agree as follows:
1. AMENDMENT TO SCHEDULE F, LIST OF LICENSED CONNECTIONS
Schedule F to the Agreement shall be deemed amended as follows:
"TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
1
SCHEDULE "F"
LIST OF LICENSED CONNECTIONS
Tenaris NK3SB(C) Family
NK 3SB
NEW NK 3SB
NK 3SB-ST
NK 3SB-SL
NK HW
NK HWSL
NK HL
TenarisBlue (tm) Family
TenarisBlue
TenarisBlue dopeless
2. AMENDMENT TO SCHEDULE G. PATENTS
Schedule G to the Agreement shall be deemed amended as follows:
"TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "G"
PATENTS
Tenaris Patents under which Licensee is licensed by Tenaris for Threading and
Reconstruction, use or sale of Products and Accessory Equipment pursuant to this
Agreement:
----------------------------------------------------------------------------------------------------------------------
(In Japan)
----------------------------------------------------------------------------------------------------------------------
No Title of Invention Co-Patentee Application Application Registration Registration
(Co-Applicant) Date Number Date Number
----------------------------------------------------------------------------------------------------------------------
1 WORKING FOR TAPERED SCREW 1983.4/27 58073060 1989.10/12 1524370
----------------------------------------------------------------------------------------------------------------------
2 PIPE-EDGE READING AND CORRECTION 1983.4/27 58073061 1989.10/12 2524372
THEREOF IN TAPERED SCREW CUTTER
----------------------------------------------------------------------------------------------------------------------
3 CUTTING DEVICE FOR STEEP PIPE, ETC. 1983.7/1 58118183 1990.10/11 1581626
----------------------------------------------------------------------------------------------------------------------
4 Screw joint coupling for oil pipes - 1984.6/20 59125346 1991.5/31 1605470
having tapered female sealing
portion mating with male member
having convex sealing portion to
obviate stress corrosion
----------------------------------------------------------------------------------------------------------------------
2
----------------------------------------------------------------------------------------------------------------------
5 THREAD CUTTING METHOD FOR STEEL PIPE 1992.1/20 04028867 1999.4/24 2773513
----------------------------------------------------------------------------------------------------------------------
7 RIDGE DEBURRING METHOD 1993.5/19 05140138 2000.7/7 3085025
----------------------------------------------------------------------------------------------------------------------
8 SCREW JOINT FOR OIL WELL PIPE 1992.10/9 04297783
----------------------------------------------------------------------------------------------------------------------
10 CUTTING TOOL FOR STEEL PIPE 1996.6/18 08157107
----------------------------------------------------------------------------------------------------------------------
11 SCREW CUTTING METHOD FOR STEEL PIPE 1996.12/18 08338107
----------------------------------------------------------------------------------------------------------------------
14 THREADING METHOD FOR STEEL PIPE 1998.5/27 10145731
----------------------------------------------------------------------------------------------------------------------
(In Foreign Country)
----------------------------------------------------------------------------------------------------------------------
No Title of Invention Country Application Application Registration Registration
Date Number Date Number
----------------------------------------------------------------------------------------------------------------------
4 Screw joint coupling for oil pipes - Singapore 1984.9/12 487/89 1989.10/12 487/89
having tapered female sealing portion -----------------------------------------------------------------------
mating with male member having convex United 1984.9/5 647677 1986.11/18 4623173
sealing portion to obviate stress States
corrosion
-----------------------------------------------------------------------
Argentina 1984.9/28 298119 1988.9/30 237793
-----------------------------------------------------------------------
Canada 1984.9/5 462495 1990.5/29 1269684
-----------------------------------------------------------------------
Germany 1984.9/21 P3434763.1 1986.8/7 P3434763.1
-----------------------------------------------------------------------
France 1984.9/18 8414295 1987.9/28 8414295
-----------------------------------------------------------------------
United 1984.9/12 8423055 1988.4/27 2160609
Kingdom
-----------------------------------------------------------------------
Iraq 1984.10/23 164/84
-----------------------------------------------------------------------
Iran 1984.9/25 26424 1985.3/14 22884
-----------------------------------------------------------------------
Italy 1984.9/18 48869A/84 1987.9/16 1179428
-----------------------------------------------------------------------
Kuwait 1984.9/19 115PA/84
-----------------------------------------------------------------------
Mexico 1984.9/14 202701 1990.3/29 160640
-----------------------------------------------------------------------
Norway 1984.9/11 843590 1991.11/13 167526
-----------------------------------------------------------------------
Saudi 1985.1/21 1985.1/21 1
Arabia
----------------------------------------------------------------------------------------------------------------------
3
TenarisBlue Family:
Patent Pending."
3. AMENDMENT TO SCHEDULE H. TRADEMARKS
Schedule H to the Agreement shall be deemed amended as follows:
"TENARIS CONNECTIONS B.V./TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
TENARIS PREMIUM CONNECTIONS TECHNOLOGY LICENSE
AGREEMENT
SCHEDULE "H"
TRADEMARKS
Trademarks under which Licensee is licensed by TENARIS for Threading,
Reconstruction, use or sale of Products and Accessory Equipment pursuant to this
Agreement:
Tenaris NK3SB(C) Family
NK 3SB
NEW NK 3SB
NK 3SB-ST
NK 3SB-SL
NK HW
NK HWSL
NK EL
TenarisBlue (TM) Family
TenarisBlue
TenarisBlue dopeless
4. NO OTHER CHANGES. NO RELEASE OF LIABILITY
The execution, delivery and effectiveness of this Addendum shall not operate as
an amendment of any other right, power, obligation or remedy set forth in the
Agreement. None of the provisions set forth in this Addendum shall be construed
as an assignment or a release of any obligation or liability of Licensee under
the Agreement.
5. GOVERNING LAW.
This Addendum shall be governed by the law that governs the Agreement. Any
dispute that may arise in relation to this Addendum shall be resolved as
provided in Section 15.2 of the Agreement.
IN WITNESS WHEREOF, each party has caused this Addendum in two original
counterparts to be subscribed by its duly authorised representative on this 10th
day of November, 2002.
4
TENARIS CONNECTION BV TUBOS ▇▇ ▇▇▇▇▇ DE MEXICO S.A.
By: /s/ ▇▇▇▇▇▇ ▇▇▇ By: /s/ ▇▇▇▇▇ ▇▇▇▇ /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
---------------------------- -------------------------------------
HBM Europe B.V. ▇▇▇▇▇ ▇▇▇▇/▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
Title: Managing Director Title:
Date: Date:
5
